The Patents County Court was set up under its most recent guise in late 2010 under the stewardship of Judge Birss as Deputy Judge with the aim of providing efficient Intellectual Property case trials as an alternative to costly and timely High Court trials. The key provisions of the PCC are that costs are on a fixed scale capped at £50 000, damages which the court can award is limited to £500 000 and each trial is aimed to be concluded within 2 days.

The ever-innovative HH Judge Colin Birss QC has recently issued a second non-binding preliminary opinion during a trade mark case that was due to be heard at the UK Patents County Court (PCC). A non-binding opinion is an opinion of the residing judge, generally during the case management conference stage of proceedings (before trial) as to the likely outcome of the case, were the case to be tried at the PCC.

During the case management conference stage of PCC proceedings in the latest case, Fayus Inc & another (Claimants) v Flying Trade Group Plc (Defendant), the Claimants requested Judge Birss issue a non-binding preliminary opinion on the claim against the Defendant based on passing off and seeking a declaration of invalidity. The Claimants sold African foods under and by reference to ‘OLA-OLA’ in the UK since 2004. In 2011 the Defendant sold general food products under the same name. Both marks are figurative and were similar. In 2010 the Defendant secured a registered trade mark for OLA-OLA.

Although the Defendant was not present at case management conference to either agree or disagree to the request, they later consented to the opinion (both parties must consent).

Judge Birss’ non-binding preliminary opinion concluded that:

(1)   The passing off case was strong.

(2)   It followed also that the case for invalidity against the Defendant’s mark was also strong.

As a result, the Claimant’s bargaining position has been strengthened; however it will be interesting to see if the case goes to full trial.

Earlier in the year another non-binding preliminary opinion was issued by Judge Birss during Weight Watchers (UK) Limited & Ors (Claimant) v Love Bites Limited & Ors (Defendant).

It remains to be seen whether Judge Birss has set a precedent and we will now see an influx of non-binding preliminary opinion requests during intellectual property case proceedings before the Patents County Court, particularly as Judge Birss has been quoted in saying “it is likely that an appropriate circumstance in which this procedure might be used is one in which it may settle a case”.

We are still awaiting a first opinion issued during a Patents County Court trial involving a patent.

Parties should take caution when considering requesting non-binding preliminary opinions, as a favourable or indeed unfavourable opinion could significantly alter the landscape of a dispute.

An opinion of this nature appears to have a double-edged nature about it; a favourable opinion may prompt a party to see out a trial to obtain maximum damages whereas an unfavourable opinion may put a party in a weaker position than before, therefore having to negotiate a non-favourable settlement with the other side.

Of course, non-binding opinions on Intellectual Property rights in the UK are not uncommon. For a number of years, the UK Intellectual Property Office has issued non-binding opinions upon request for UK patent matters relating infringement and validity.

In any case, it seems as though Judge Birss has taken another step towards his goal of maximising the efficiency of UK Patents County Court proceedings in terms of the trial length, as well as the overall costs incurred by all parties involved.

Hiren Gandhi   7 November 2012